In the context of addressing claim construction issues, the US Court of Appeals for the Federal Circuit explained that the district court correctly declined to rely on the “plain and ordinary meaning” where the parties had a genuine dispute regarding claim scope, and that it is not appropriate to rely on the doctrine of claim differentiation where such reliance ignores the specification and excludes the preferred embodiment. Clare v. Chrysler Group LLC, Case No. 15-1999 (Fed. Cir., Mar. 31, 2016) (Moore, J).
The plaintiffs own two patents directed to a hidden storage compartment in the bed of a pickup truck that was designed to add storage without substantially altering the truck’s external appearance. According to the patents, the only visible modifications to the disclosed truck are two vertical lines in an external side panel. The hinge and latch of the hidden storage compartment are not visible from the exterior of the truck. The plaintiffs sued Chrysler for infringement of these two patents.
At issue are two claim limitations related to the external appearance of the truck, which the district court and the parties characterized as the “external appearance limitations.” The district court construed these limitations the same way, to mean that “the hinge portion is constructed such that the storage box is not obvious from the outward appearance of the pickup truck.” After the district court granted the defendant summary judgment, finding that the defendant’s accused truck includes a hinged panel that is clearly visible from the exterior of the truck, which makes the location of the storage box on the truck visually apparent, the plaintiffs appealed.
On appeal, plaintiffs argued, among other things, (1) that the district court should not have construed the disputed limitations, because their meaning was readily apparent to a lay person, and (2) that the district court erred by giving two different claim limitations the same construction.
The Federal Circuit was not persuaded. As to the first issue, the Court explained that “[a]lthough those words may be readily apparent to a lay person there existed a fundamental dispute regarding the scope of those limitations.” With respect to the second issue, plaintiffs noted that one of the disputed external appearance limitations required the pickup truck to have “an external appearance of a conventional pickup truck,” while the second limitation required the pickup truck to have “substantially” the same external appearance. According to the plaintiffs, based on the doctrine of claim differentiation, it was not proper for the district court to ignore the word “substantial” in the claim limitation. The Court explained that in this case, differentiating between the two sets of claim limitations would result in the exclusion of the specification’s description of the invention and the preferred embodiment. Here, based on the description of the invention in the specification, the Court concluded that a person of ordinary skill in the art would understand the two sets of limitations to have the same meaning.
Having affirmed the district court’s claim construction, the Federal Circuit also affirmed the summary judgment of no infringement, agreeing “that no reasonable juror could find that the hinged portion of the RamBox’s storage compartment was not obvious from the outward appearance of the accused trucks.”